Design Decision O/730/18

O-730-18

REGISTERED DESIGNS ACT 1949 (AS AMENDED)

IN THE MATTER OF REGISTERED DESIGN NO. 5000104 IN THE NAME OF FEEL GOOD UK

AND

THE REQUEST TO INVALIDATE THE REGISTRATION (NO. 7/18) BY COZY PET LTD

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Background and pleadings

1. The registered design which is the subject of this dispute was filed by Feel Good

UK1 (“the registered proprietor”) on 16 October 2015. The design is described on the

application form as a “chicken coop”. There are four representations of the registered

design attached to the application, as shown below:

1 Which appears to be a trading name of Clarke-Coles Ltd.

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2. On 15 February 2018, Cozy Pet Ltd (“the applicant”) requested that the design be

declared invalid under Section 1B of the Registered Designs Act 1949 (“the Act”),

which requires that a registered design be new and have individual character. The

applicant claims that the registered proprietor has sold such a chicken coop on

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Amazon and Ebay since before the registered design was filed, attaching evidence of

what it claims to be prior art which destroys the novelty of the registered design2.

3. A notice of defence on Form DF19B, which contains a statement of truth, was

signed by Lauren Coles, who also identified herself on that form as the registered

proprietor. Ms Coles disputed that the applicant’s evidence shows that the proprietor

sold the chicken coop outside of the ‘grace period’ (a reference to section 1B(6)(c) of

the Act), thereby denying the ground alleged.

5. Both sides filed evidence. On 17 August 2018, Ms Coles emailed the Registry

saying:

6. Ms Coles also filed a witness statement dated 29 August 2018 in which she stated:

“It is my understanding that the applicant is the one who must provide

conclusive evidence of this design being made available in the public domain

2 The application form includes a statement of truth, signed by Claire Woodhouse, meaning that the statement of case qualifies as evidence in accordance with rule 21(1)(a) of the Registered Designs Rules 2006 (“the Rules”).

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before the registration period began in Oct 2014[3], this should be provided as

a clear representation of the design along with the date, this has not been

provided, Cozy Pet have failed to provide the evidence required by the IPO.

However, in recent days an encounter with a former employee who worked at

Feel Good UK prior to my employment has brought about some new

information which is further proof of our ownership of the design and shows an

even longer history of the design being appropriately registered.

It appears that the first prototype of this design was photographed and

submitted to the IPO on the 6th September 2014, the design which is registered

as design 4037013 (doc 1) supercedes design 5000104 (doc 2)[4]. The reason

this was not known to myself is the employee who submitted it left suddenly

due to family illness and the certificate was not filed correctly, however, now it

has come to light I can show that the applicant would need to show the design

in question in the public domain before September 6th 2013[5]. We can

categorically state the design in question was not sold on eBay until early 2015,

as shown with our previous evidence which has yet to be disproved by the

applicant, but the applicant can now only challenge the earlier design 4037013

by showing a representation of the design in the public domain before 6

September 2013.

Due to the employee leaving fairly suddenly and then the misfiling of the design

certificate we submitted the design (5000104) in the Oct of 2015 which was

around 9 months after the item first became available for sale to the public, we

did not realise at the time the design was already protected by the earlier

submission of design 4037013.

I have spoken to the IPO helpline who have advised that we can rescind the

later design if we wanted to but the earlier design would remain in place offering

protection on the design, however the fact a later, updated submission was

made is not a problem.”

3 The contested design was not registered until October 2015. 4 Docs 1 and 2 are copies of the details for 4037013 and 5000104 on the designs register. 5 4037013 was filed on 6 September 2014.

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7. On 20 September, Ms Coles followed her email enquiry and witness statement with

a letter to which was attached statutory Form DF19C ‘Notice by proprietor to cancel a

registration’. The letter was signed by Ms Cole and said:

“Owing to the discovery of the earlier design, predating the design in question

we are submitting form DC19C for design 5000104.

Our discovery of the earlier design predates the submission of 50000104 and

despite there being some minor changes to the design the overall impression

would be deemed the same.”

8. The Registry wrote to the applicant on 21 September 2018 to enquire whether the

applicant wished to continue with the proceedings, in the light of the proprietor having

cancelled its registration. No reply was received from the applicant. As the

proceedings are still extant, it is necessary, therefore, to decide the outcome of the

applicant’s cancellation action including the effect of the proprietor having cancelled

its registration for the reasons it has given.

Decision

9. Section 11ZA of the Act provides the capacity for a registered design to be

invalidated on the ground (section 1B) that it was not new or that it did not have

individual character. Section 1B reads:

“(1) A design shall be protected by a right in a registered design to the extent

that the design is new and has individual character.

(2) For the purposes of subsection (1) above, a design is new if no identical

design whose features differ only in immaterial details has been made

available to the public before the relevant date.

(3) For the purposes of subsection (1) above, a design has individual

character if the overall impression it produces on the informed user

differs from the overall impression produced on such a user by any

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design which has been made available to the public before the relevant

date.

(4) In determining the extent to which a design has individual character, the

degree of freedom of the author in creating the design shall be taken into

consideration.

(5) For the purposes of this section, a design has been made available to

the public before the relevant date if-

(a) it has been published (whether following registration or

otherwise), exhibited, used in trade or otherwise disclosed

before that date; and

(b) the disclosure does not fall within subsection (6) below.

(6) A disclosure falls within this subsection if-

(a) it could not reasonably have become known before the

relevant date in the normal course of business to persons

carrying on business in the European Economic Area and

specialising in the sector concerned;

(b) it was made to a person other than the designer, or any

successor in title of his, under condition of confidentiality

(whether express or implied);

(c) it was made by the designer, or any successor in title of

his, during the period of 12 months immediately preceding

the relevant date;

(d) it was made by a person other than the designer, or any

successor in title of his, during the period of 12 months

immediately preceding the relevant date in consequence

of information provided or other action taken by the

designer or any successor in title of his; or

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(e) it was made during the 12 months immediately preceding

the relevant date as a consequence of an abuse in relation

to the designer or any successor in title of his.

(7) In subsections (2), (3), (5) and (6) above “the relevant date” means the

date on which the application for the registration of the design was made

or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as

having been made.

(8) ……

(9) .…”.

10. According to section 1B(7) of the Act, prior art can only be relied upon to invalidate

a registered design if it has been disclosed to the public prior to the application date

of the registered design being attacked, unless the exceptions in subsection (6) apply.

This means that the relevant date for my assessment is 16 October 2015.

11. Ms Coles, for the registered proprietor, has filed a request to cancel the registered

design which is the subject of these proceedings, 5000104. She has explained in her

email, witness statement of 29 August 2018, and letter attached to the cancellation

form DF19C, that she considers 4037013 to constitute an earlier design which

predates 5000104 and that “the overall impression would be deemed the same”.

12. 4037013 was applied for on 6 September 2014. 5000104 was applied for on 16

October 2015. 4037013 was, therefore, applied for over 12 months prior to the filing

of 5000104, which means that the exception provided for under section 1B6(c) of the

Act (“that it was made by the designer, or any successor in title of his, during the period

of 12 months immediately preceding the relevant date”), cannot apply. 4037013,

having been applied for as a registered design, had been made available to the

relevant public more than 12 months prior to the application date of 5000104 (also see

section 11ZA(1A)(b)(i), below).

13. 4037013 constitutes prior art, in relation to which Ms Cole has stated that “the

overall impression would be deemed the same” as for 5000104. She/the proprietor

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has cancelled 5000104 on that basis. It is unnecessary for me to consider the

applicant’s evidence because the registered proprietor has, itself, stated that 4037013

“supercedes” 5000104. The effect of this statement, together with the other

information provided by Ms Coles in her email, witness statement and letter attaching

the form DF19C, is that the registered proprietor has itself admitted that prior art

existed more than 12 months prior to the application date of 5000104. The

consequence of the above is that at the relevant date, 5000104 was not new and did

not have individual character, which means that it was invalid when applied for and

registered.

14. Section 11ZA states:

“(1) The registration of a design may be declared invalid —

(a) on the ground that it does not fulfil the requirements of section 1(2)

of this Act;

(b) on the ground that it does not fulfil the requirements of sections 1B

to 1D of this Act; or

(c) where any ground of refusal mentioned in Schedule A1 to this Act

applies.

(1A) The registration of a design (“the later design”) may be declared invalid if

it is not new or does not have individual character when compared to a design

which—

(a) has been made available to the public on or after the relevant date;

but

(b) is protected as from a date prior to the relevant date—

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(i) by virtue of registration under this Act or the Community Design

Regulation or an application for such registration, or

(ii) by virtue of an international registration (within the meaning of

Articles 106a to 106f of that Regulation) designating the

Community.

(1B) In subsection (1A) “the relevant date” means the date on which the

application for the registration of the later design was made or is treated by

virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.

(2) …

(3) …

(4) …

(5) In this section and sections 11ZB, 11ZC and 11ZE of this Act (other than

section 11ZE(1)) references to the registration of a design include references

to the former registration of a design; and these sections shall apply, with

necessary modifications, in relation to such former registrations.”

15. The proprietor, as set out earlier in this decision, has discovered it owns an earlier

design registration which was made available to the public more than 12 months prior

to the filing of 5000104. The establishment of this fact has come from the proprietor

without it being necessary to assess the merits of the applicant’s evidence. On this

basis, it appears that the ground of invalidity specified in the application has been

established. I find that design registration (or former registration) 5000104 was invalid

from 16 October 2015.

Outcome

16. Registration 5000104 was invalidly registered from 16 October 2015.

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17. Nothing I have said in this decision applies to design 4037013.

Costs

18. The objective which the applicant set out to achieve was obtained owing to the

proprietor’s own admission that its registration was not new/did not have individual

character at the relevant date. It has, therefore, been unnecessary to assess the

merits of the applicant’s evidence. The applicant states in its application for

cancellation that the proprietor made an allegation that the applicant was infringing

5000104. That allegation was the catalyst for the application for cancellation. The

applicant’s statement is corroborated by the registered proprietor in its

counterstatement. It was 5000104 which was the issue.

19. The applicant has unnecessarily been put to the trouble of seeking to have

5000104 declared invalid, when the registered proprietor itself has cancelled the

design registration on the same grounds as the applicant has sought invalidation. It

seems to me that, on that basis, the applicant is entitled to a contribution towards the

costs of the proceedings, based upon the scale published in Tribunal Practice Notice

2/2016. The applicant is unrepresented, so would not have incurred the costs of legal

representation. I award the official fee of £48 for filing the cancellation action. I also

award £100 towards the cost of putting together the applicant’s statement of case,

which included an amount of evidence. I make no comment as to the efficacy of that

evidence as it will be apparent from this decision that no assessment of evidence was

necessary. The award merely reflects the trouble to which the applicant was put in

filing an application to cancel 5000104 which the registered proprietor subsequently

cancelled on the same ground as that sought by the applicant.

20. There is a question over the legal entity of the registered proprietor which has a

bearing on who is liable to pay the costs award. The register records the owner of the

cancelled registration as Feel Good UK. I note from the correspondence on the official

file that the headed paper on which Ms Coles has written to the registry says

“CLARKE-COLES LTD T/A Feel Good UK”. Feel Good UK is a trading name, not a

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legal person (corporate or otherwise). It is not, therefore, a legal entity capable of

holding property6.

21. On the statutory Form DF19B which is the counterstatement, filled in by Ms Coles,

she has identified herself, Lauren Coles, as proprietor, under box 3 “Full name of the

proprietor”. Ms Coles is a legal person. As Ms Coles has identified herself in these

proceedings as the proprietor, she is liable for costs.

Cost order

22. I order Lauren Coles to pay Cozy Pet Ltd the sum of £148. This sum is to be paid

within 14 days of the expiry of the appeal period or within 14 days of the final

determination of this case if any appeal against this decision is unsuccessful.

Dated this 14th day of November 2018

Judi Pike For the Registrar, The Comptroller-General

6 Section 15A of the Act states: “A registered design or an application for a registered design is personal property (in Scotland, incorporeal moveable property)”.

Design Decision O/730/18

Documents

Transcript of Design Decision O/730/18